Unified Patent Court Resource Center - McDermott Will & Emery

UNIFIED PATENT COURT

RESOURCE CENTER

The Unified Patent Court (UPC) and the European patent with unitary effect (Unitary Patent) are revolutionizing the way patents are enforced in Europe. McDermott’s intellectual property team is deeply familiar with the patent landscape in Europe and the United States and is well-positioned to advise clients on developing an appropriate UPC plan of action and integrating it with their broader international strategy.

 

EVENTS & WEBINARS

INDUSTRY EVENTS & SPEAKING ENGAGEMENTS

LSPN NORTH AMERICA – Spring 2024

Unified Patent Court
May 8-9, 2024 | Boston, MA

Chuck Larsen is speaking on a panel that focuses on the initial UPC cases that have been filed, trends in the divisions, the parties accessing the court and substantive decisions made so far.

BIPLA 4th annual symposium

UPC: Developments in the Last Year and Impact on Litigation Strategies
April 10-11, 2024 | Boston, MA

Chuck Larsen is speaking on a panel where he will analyze recent developments related to the UPC over the past year. During this session, he will explore the effects of these developments on litigation strategies.

WIPR Summit: charting the course for global Ip excellence

The Shifting Global IP Landscape
March 20-21, 2024 | Chicago, IL

Chuck Larsen is speaking on a panel that examines what the global IP strategy needs to look like to minimize risk and seize opportunities amidst the UPC in Europe and the shifting IP situation in East Asia.

ADDITIONAL SPEAKING ENGAGEMENTS

OCIPLA Virtual Event, Unified Patent Court: Initial Cases | November 16, 2023

Life Sciences Dealmaking Symposium 2023IP Workshop: Asset Valuation and the Changing International Landscape | November 9, 2023

IAM Connect: UPC 2023, Using the New Court System to Maximum Effect | October 17, 2023

6th Annual International IP Summit, EU’s Unified Patent Court | October 12-13, 2023

COURT STRUCTURE

The goal of the UPC is to reduce the cost and complexity associated with enforcing patents in the EU Member States and to generally improve the patent system in Europe. A UPC decision on infringement, validity, injunction and damages will be enforceable in all participating states—currently 17 countries including France and Germany. The UPC will be the exclusive forum for actions relating to Unitary Patents. It will also be competent for traditional European patents, unless the European patent has been proactively opted out, and for supplementary protection certificates granted for European patents.

The UPC provides many opportunities and potential benefits but, as a new court, it remains untested. We are here to advise clients and help them navigate any uncertainties. McDermott’s capabilities include:

  • Developing a Robust Cross-Border Strategy. We offer in-depth knowledge of our clients’ industries, including the technical, economic and regulatory environments, and can advise on both offensive and defensive strategies.
    • Offensive. Our team can advise on whether the UPC is the right avenue for enforcement according to a client’s priorities and goals. When the time comes, we can prepare and file infringement and revocation actions in the UPC. We can also advise on whether US or UK litigation should be included in the enforcement strategy.
    • Defensive. Our team is well qualified to advise on patents that may be at risk of central attack and products that may face heightened infringement risk by the new venue. We can also help manage those risks and defend against competitor attacks. If an action is filed, we can prepare the defense in the litigation.
    • Opt-out. Our team can advise on whether opting out of the UPC is the right course of action. Below are just a few example reasons to consider.
EXAMPLE REASONS TO OPT-OUT EXAMPLE REASONS TO NOT OPT-OUT
The patent or patent family is too valuable to risk central revocation in the participating UPC Member States The UPC could provide a speedy decision awarding an injunction and damages for several UPC Member States
A dispute with another party may lead to an action before the UPC, preventing you from opting out at a later time A competitor may bring national proceedings and remove the possibility of opting back in at a later time
German bifurcation between infringement and invalidity proceedings increases the chances of obtaining an injunction more quickly It may reduce costs and administrative time when compared to multiple national court actions because evidence gathered in one country can easily be used UPC-wide
The patent or patent family has already unsuccessfully opposed by a competitor, and is therefore susceptible to an action for central revocation

 

  • Unitary Patent Filings. Our team can assist with the strategy and paperwork for obtaining Unitary Patents and national patents.
    • R&D and License Agreements. We can also advise on how to address existing or to-be-negotiated R&D and licensing agreements.
UPC DEADLINES TIMELINE

The timeline below includes the current and anticipated deadlines for the UPC.

 

UPC PROCEDURAL TIMELINE

The new UPC proceedings are structured to be fast and efficient. The goal is to conclude final oral hearings on infringement and validity issues within one year, while recognizing that complex cases may require more time. The full procedural timeline of a UPC case from filing through appeal can be downloaded below.
 

 

UPC jurisdiction will cover all EU Member States that ratify the UPC Agreement. Seventeen countries ratified before the launch date and it is expected that other countries will do so in the future. This map will continue to be updated as more countries ratify.